The “Big Jack” Verdict: No Trade Mark Infringement by Hungry Jack’s
Following a 3 year Court battle brought by McDonald’s against Hungry Jack’s, the Australian Federal Court has ruled that Hungry Jack’s did not engage in trade mark infringement.
The fast-food industry is highly competitive, with companies constantly vying for the attention of consumers and innovating to stay ahead.
The legal beef between the burger giants began when Hungry Jack’s released burgers called the “Big Jack” and “Mega Jack”. McDonald’s alleged that this was an infringement of McDonalds’ trade mark over “Big Mac”.
During the trial, Hungry Jack’s chief marketing officer, Scott Baird, admitted that there was an “element of cheekiness” in the burger name, but maintained that the name was not chosen because of its similarity with McDonalds’ burgers.
The Court emphasised that for a trade mark to be protected, it must possess a level of distinctiveness that sets it apart in the market. McDonald’s asserted that the use of the term “Big” in Hungry Jack’s Big Jack was an infringement. However, the Court clarified that trade mark protection is not absolute and does not extend to every use of a common term like “Big.” The scope of protection must be reasonably defined.
Another critical legal consideration was the examination of how consumers could perceive the products. The Court looked at whether the average consumer would likely be confused between the Big Jack and Big Mac. The Court held that the respective names were not deceptively similar and that consumers would not be confused between which restaurant sold the respective burgers.
It wasn’t however a total win for Hungry Jack’s. McDonald’s succeeded in a separate argument that Hungry Jack’s had mislead consumers and breached consumer laws by advertising that its Big Jack burger contained “25% more Aussie beef” than the Big Mac burger. Tests conducted by a scientist during the trial showed Hungry Jacks’ claim to be incorrect.
This case shows that the argument of trade mark infringement can often be a fine line. Such disputes highlight the competitive nature of the market and the lengths companies are willing to go to protect their brand identity. If in doubt about whether your advertising (or that of a competitor) may constitute trade mark infringement, obtaining legal advice is key.
By Luke McKavanagh
Luke is part of Salerno Law’s commercial law team. His days involve providing advice on a wide variety of commercial issues that arise in operating small to medium businesses, where he assists clients who are growing their business or wanting to protect what they’ve established.